USPTO Patents Application 09870801

PLEASE STAMP TO ACKNOWLEDGE RECEIPT OF THE FOLLOWING:

In re Application of: Kar! L. GINTER, et al.

Serial No.: 09/870,801 Group Art Unit: 2132

Filed: June 1, 2001 Examiner: G. Barron, Jr.

For: SYSTEMS AND METHODS FOR SECURE TRANSACTION MANAGEMENT AND
ELECTRONIC RIGHTS PROTECTION

1 . Updated Notice Regarding Related Litigation (4 pages), with Exhibits 1-11.

Dated: April 3, 2003

Docket No.: 07451.0001-18000

•

PATENT
Customer Number 22,852
Attorney Docket No. 07451 .0001 .18
InterTrust Ref. No.: IT-5.2.1.1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Filed: June 1,2001

For: SYSTEMS AND METHODS FOR
SECURE TRANSACTION
MANAGEMENT AND
ELECTRONIC RIGHTS
PROTECTION

Commissioner for Patents
Washington, DC 20231

UPDATED NOTICE REGARDING RELATED LITIGATION

Further to the submission of the Notice Regarding Related Litigation on October
31, 2002, Applicants submit this Updated Notice to inform the Examiner of the status of
the litigation case between InterTrust and Microsoft, entitled InterTrust Tech. Corp. v.
Microsoft Corp. (C 01-1640 SBA, N. D. Ca.). Applicants also submit copies of papers
exchanged by the parties in the course of this litigation. Many of these papers relate to
claim construction.

FINNECAN
HENDERSON
FARABOW
CAR R ETT Si
DUNNER Li£

1300 1 Street, NW
Washington, DC 20005
202.408.4000

Fax 202.408.4400
www.finnegan.com

In re Application of:

Karl L. GINTER et al.

Group Art Unit: 2132

Serial No.: 09/870,801

Examiner: G. Barron, Jr.

FINNECAN
HENDERSON
FARABOW
GARRETT &
DUNNER llp

1300 I Street NW
Washington, DC 20005
202.408.4000
Fax 202.408.4400
www.finnegan.com

STATUS OF RELATED LITIGATION

On October 24, 2002, InterTrust filed a Fourth Amended Complaint, adding to the
case claims of infringement of U.S. Patent Nos. 6,112,181; 5,915,019; 5,949,876; and
6,389,402 B1. See Exhibit 1.

On November 1 , 2002, Judge Saundra Armstrong signed an Order granting, in
part, Microsoft's Motion for a Partial Stay. See Exhibit 2. On November 5, 2002, Judge
Armstrong signed a Further Case Management Order. See Exhibit 3. Both orders
listed the claims which were selected to be the subject of a "mini-Markman" and
"indefiniteness" hearing. The case management order set out a timeline for the
exchange and submission of Patent Local Rule (PLR) materials. The following chart
lists the claims selected to be the subject of the PLR materials and the mini-Markman
hearing.

U. S. Patent Number

Claim(s)

6,253,193

1, 11, 15, 19

6,157,721

1, 34

5,917,912

8, 35

5,920,861

58

5,982,891

1

6,185,683

2

5,892,900

155

On November 7, 2002, Microsoft filed its Answer and Counterclaims to
InterTrust's Fourth Amended Complaint. See Exhibit 4.

-2-

On November 8, 2002, under PLR 4-1, the parties exchanged proposed terms
and claim elements for construction. See Exhibits 5 & 6.

On December 20, 2002, under PLR 4-2, the parties exchanged preliminary claim
constructions and extrinsic evidence supporting the claim constructions. See Exhibits 7
& 8. Microsoft's PLR 4-2 Disclosure (Exhibit 8) includes Exhibits A-G 1 . Exhibit 8D
contains copies of excerpts from dictionaries and other publications. Due to the volume
of the appended pages, Applicants have provided a list of the source dictionaries and
publications in place of the excerpted pages. Exhibit 8F as submitted by Microsoft
contains a list of selected, uncited prior art publications, identified by bates numbers
used by the parties in the litigation. For clarification, Applications have added a list
identifying each document in Exhibit 8F by name. Exhibit 8G as submitted by Microsoft
contains a list of selected, uncited prior art patents, also identified by bates numbers.
Applications have added a list identifying each of the listed documents by patent
number. On January 10, 2003, Microsoft submitted revised Exhibits 8F and 8G, in
which the number of references was reduced. Applications have identified the
documents in the revised lists in bold.

On February 3, 2003, under PLR 4-3, the parties filed a Joint Claim Construction
and Prehearing Statement. See Exhibit 9.

On March 17, 2003, InterT rust filed InterT rust's Opening Claim Construction
Brief. See Exhibit 10. On March 17, 2003, Microsoft filed Microsoft's Brief in Support of

1 To distinguish Exhibits A-G of Exhibit 8 from Exhibits A-G of Exhibit 9, Applicants will
hereinafter refer to Exhibits A-G of Exhibit 8 as Exhibits 8A-8G.

-3-

Motion for Summary Judgment that certain "Mini-Markman" Claims are Invalid for
Indefiniteness. See Exhibit 11.

Due to the voluminous number of references indicated by these papers, they
have not been provided. If the Examiner would like to review any of the references from
Microsoft's PLR 4-2 Disclosure or any of the exhibits from InterTrust's Opening Claim
Construction Brief or Microsoft's Brief in Support of Motion for Summary Judgment,
Applicants invite the Examiner to contact the undersigned at (650) 849-6643 and
Applicants will provide them.

If there are any fees due with the filing of this Notice not already accounted for,
please charge the fees to our Deposit Account No. 06-0916.

Fl NNECAN
HENDERSON
F A R A 8 O W
GAR RETT&
DUNNE R UP

1300 I Street NW
Washington, DC 20005
202.408.4000

Fax 202.408.4400
www.finnegan.com

REMARKS

Respectfully submitted,

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

Dated: April 2, 2003